intellectual property primer university of guelph april 15, 2015
TRANSCRIPT
Intellectual Property Primer
University of Guelph
April 15, 2015
Agenda
• IP overview• Patents• Costs
Intellectual Property Rights
• Patents• Confidential Information & Trade Secrets• Industrial Designs / Design Patents• Trademarks• Copyright
Intellectual Property Rights
• IP rights are limiting or negative rights – The right to stop others from using your IP– Not the right to do anything
The Technology Life Cycle
• Different inventions proceed in parallel– Continuous development of improvements and
new innovations to improve commercial products• “Genius is 1% inspiration and 99%
perspiration.”• Thomas Edison, 1903
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Confidential Information /Trade Secrets
• Confidential Information– Any information that is treated as confidential and
proprietary can be protected• Customer lists, business plans, technical information, “know-
how”, unpatentable inventions
Trade Secrets
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Confidential Information /Trade Secrets
• Trade Secret– Confidential Information that relates to a product or
service in trade and has a commercial value• Keep invention secret to protect patent rights• Keep unpatentable (or marginal) inventions
secret to avoid disclosure• No registration process, but positive steps must
be taken to preserve confidentiality• Fragile rights that are easily lost by accidental
disclosure or by independent development
Patents
• Patent protect practical implementation of utilitarian and functional inventions– Statutory rights that are granted for a limited time period– Very powerful rights that cannot be defeated by
ignorance of a patent or independent invention• Registration is required
Patents and Designs
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Industrial Designs / Design Patents
• Shapes, pattern or ornamentation that appeal to the eye• No protection for functional aspects• Design must be original• Registration required• Time limited protection – Canada 10 years, USA 14 years
Patents and Designs
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Trademarks
• Trademarks help consumers associate a product with a source
• Optional registration, but highly recommended to get significantly enhanced rights
• Potential indefinite protection, but design must remain distinctive
Trademarks
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Trademarks• Names, Logos, Shapes, Sounds, Smells• Best trademarks are coined phrases– Xerox, Kodak– Descriptive or misdescriptive marks should be
avoided• Owner of a registered trademark has the right to stop
third parties from using confusing marks with similar wares/services
• Famous marks get broader protection
Copyright
• Traditionally used to protect artistic, literary, musical and dramatic works
• Registration not required, limited terms• Can also provide limited protection for technology– Software, Database structure and contents, Website
structure, layout and contents, Games, User Guides / Instructions, Logos, Theme Music
Copyrights (in some cases)
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Summary
Patents and DesignsTrade Secrets
TrademarksCopyrights (in some cases)
Innovation
Brand Development
Commercialization
Research & Development
Exit
Marketing
Do I Have Anything to Protect?
• Consider as follows:– Right: “What would be commercially
advantageous to protect?”– Wrong: “What do I think merits a patent”.
• What have you spent a lot of time/money to develop?
• What do you not want your competitors to do?
Publish, Trade Secret or Patent?
• Publish - I just want to stop others from patenting it– Not critical to my product strategy– It is unlikely that an application will successfully issue to
patent• Can I keep it a trade secret?– Can it be reversed engineered?– How many employees will know the information?– Are they stable employees?
• If neither, then patent it
Some Specifics about Patent Practice
Overview
1. The Patent Bargain2. What is a Patent-Eligible Invention?3. Who is an Inventor?4. Novelty & Obviousness5. Drafting the Patent Application6. Examination7. International filings
The Patent Bargain
• Enabling Disclosure of Invention • In return for– Claims for Subject-Matter in which Exclusive
Property or Privilege is Sought
No Enabling Disclosure = No Patent
What is a Patent-Eligible Invention?
• Statutory Subject-Matter
• Useful
• New
• Not Obvious
Statutory Subject-Matter• Invention must fall in a statutory class:
Useful art, process,
machine, manufacture,
composition of matter• Or an improvement of any of them.
Who is an Inventor?
• Claims determine inventorship
• Inventorship is a Factual Inquiry
• What Activity Rises to the Level of Invention?– X Workshop Improvement– X Mere Experimentation – Substitution
of Known Means– X Carrying Out the Instructions of Others
• Requires Creativity, However Slight
Novelty and Obviousness
• Has Somebody Else Already Done it?• How different is it from what was done
before?• Prior art searching
Drafting the Specification
• Specification = Description, Illustrations, Claims
• Claims Drive the Specification : – If Not Described, Can’t Be Claimed
• What do you want to claim?The Machine? How it is Built?How to Operate it? What it Makes?
Hint No. 1: How does this invention make money?Hint No. 2: What do you want to stop people from doing?
Working With Your Patent Attorney
• Prepare an invention disclosure– What has everyone else done before you? (“prior
art”)?• Patents• Publication• Competitors products
– What are the key features to protect?– How does it work?– What are its advantages?
Working With Your Patent Attorney
– Do you need/have drawings?– Has there been any public disclosure?– Will there be a public disclosure?
• The more thorough the disclosure, the more cost effective
• Additional disclosure typically cannot be added after the application is filed.
Examination - Responding To Office Actions
How to Help Your Patent Attorney:
1) How is the art different from your claim?
2) Why wouldn’t the art be a satisfactory
substitute for the claimed invention?
3) Are we claiming the wrong thing?
If All Goes Well…
International Patent Protection
• Fundamentally a business decision• Consider key/new markets? Competitors?• U.S., Canada and Europe common• China and India considered growth markets• Strategic selection of jurisdictions
International Filing Options
1. Paris Convention – File first in one country– 12 months later in all other required countries
2. Patent Cooperation Treaty (PCT)– Unified filing/search/exam procedure– Delay national filing costs by at least 30 months
National, Regional, PCT Applications
• PCT application– One applications gets your foot in the door in
most countries• Delay cost• International Search to determine likelihood of success• Product strategy not yet developed
• Regional– Europe– Eurasia
Costs
Costs - Patents
• SearchingPatentability – 2-10KFreedom to operate – country specific: 2-10K per country
• Legal opinionsAdd 10-20K
Patent Costs
• DraftingTechnology dependentInitial application
Life Science: 6-10KMechanical High Tech: 15-20K
Update to applicationLife Science: 2-4KMechanical High Tech: 6-10K
Patent Costs
• FilingCountry specificInclude government fees and firm tariffs
Canada – 1.5KU.S. – 4KPCT – 6KEurope – 15K
Patent Costs
• ProsecutionCountry specificDepends on complexity of invention and prior artOnce successful in one country can use in other countries to expedite (Patent Prosecution Highway) and reduce costs2-10K
Patent costs
• IssuanceCountry specificInclude government fees and firm tariffsCanada – 1.2KU.S. – 2.5KEurope – complicated grant procedure and validation in each country – 5-150K
Patent costs
• MaintenanceCountry specificInclude government fee and firm tariffsGenerally increase during lifetime of patentCanada - $300-$500U.S. – 3 times only
Trademark Costs*
• Preliminary Search: 300• Registrability search: 800 to 1000• Full Search: 1.4K to 1,8K or higher• Filing to issuance: 2.5K to 3.5K per
mark *for Canada only
